David Bell in Law360: Attorneys React To Supreme Court's TTAB Preclusion Ruling


On Tuesday, the U.S. Supreme Court ruled that federal court decisions on “likelihood of confusion” can be precluded by earlier findings on the same issue from the Trademark Trial and Appeal Board. Here, attorneys tell Law360 why the decision in B&B Hardware Inc. v. Hargis Industries Inc. is significant…

“Parties might find it more attractive now to litigate before the TTAB where the law appears on their side. The TTAB may provide greater certainty than a court, especially in a jury case. When obtaining a registration is of much less importance than use, however, a party may be better served by taking a trademark dispute directly to court. The court’s reasoning also is not limited to likelihood of confusion between parties’ marks. Issue preclusion could apply in descriptiveness, genericness, acquired distinctiveness, abandonment, priority and dilution determinations. Parties before the TTAB are likely to expend greater resources on trying to introduce or exclude evidence of mark usage, including bearing on the consumer bases, advertising channels and methods, and mark stylization.”

Excerpted from Law360. To read the full article, click here (subscription required).

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